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How To Obtain
A Patent

Modern American Law Lecture

Blackstone Institute, Chicago




One of a Series of Lectures Especially Prepared for the
Blackstone Institute


Copyright, 1916, By Blackstone Institute




James Love Hopkins, who contributes the following
lecture, is a native of St. Louis, where he was born in
1868. After graduating from the public High School
he entered Washington University, entering the Law
School of that institution at the end of his freshman
year. After one year in the Law School he was admitted
to the bar, in 1889, and has been practicing law ever
since. After six years of practice he completed the law
school course, taking the degree of LL.B. in 1895.

While in general practice, his argument on an insur-
ance case led the late Lyne Metcalfe, editor of the Central
Law Journal, to ask him to write an article on insurable
interest, which was followed by other contributions to
that publication, and the article on Disbarment in the
Encyclopedia of Pleading and Practice. In this pre-
liminary law writing he was encouraged and advised by
the late Seymour D. Thompson, editor of the American
Law Review, and a talented and scholarly author of
many legal texts.

His first book, Hopkins on Unfair Trade, was pub-
lished in 1899, its second edition was published in 1905
under the title Hopkins on Trademarks, and the third
edition is now in press, being the first American text on
the subject to attain a third edition. His two-volume
work on Patents was recently published and has been
accepted as a standard authority. His hand-book on
the New Equity Rules, dedicated to the late Mr. Justice
Lurton of the United States Supreme Court, was se-
lected by the Department of Justice for the use of the
Federal judges and district attorneys throughout the
United States. Hopkins' Judicial Code has also gone
into extensive use. The treatises on Banks and Trust
Companies and Unfair Competition and Good Will, in
Modern American Law, were written by Mr. Hopkins.

Mr. Hopkins has been in Federal practice exclusively
since 1898, and has never held public office. He is a
member of the Committee on Admission to the Bar of
the United States District Court at St. Louis.

As to his practice, his name is familiar to all users of
the Federal Reporter. He has appeared as special
Patent Counsel for the City of St. Louis and for the City
and County of San Francisco.




The Patent Office of the United States has what is
sometimes loosely called a "bar" of its own. But
that bar is made up of men of varying legal attain-
ments, ranging from leaders of the real patent bar
lawyers not only admitted to the bar but qualified
to act as counsel in advisory and litigated questions
of patent law down to mere "solicitors" of patents,
who are, in many cases, utterly ignorant of law. This
astonishing condition of things has been deplored by
the bar generally, and is due to the following Patent
Office rule, under which no legal education is a pre-
requisite to admission to practice in that department.

"A register of attorneys will be kept in this office,
on which will be entered the names of all persons
entitled to represent applicants before the Patent
Office in the presentation and prosecution of appli-
cations for patent. The names of persons in the
following classes will, upon their written request, be
entered upon this register :

(a) Any attorney at law who is in good standing
in any court of record in the United States or any of



the States or Territories thereof and shall furnish a
certificate of the clerk of such United States, State,
or Territorial court, duly authenticated under the
seal of the court, that he is an attorney in good

(b) Any person not an attorney at law who is a
citizen or resident of the United States and who
shall file proof to the satisfaction of the Commis-
sioner that such person is of good moral character
and of good repute and possessed of the necessary
legal and technical qualifications to enable him to
render applicants for patents valuable service and is
otherwise competent to advise and assist them in the
presentation and prosecution of their applications
before the Patent Office."

The Patent Office is a part of the Department of
the Interior, and is under the direction of the Com-
missioner of Patents, the duties of whose office call
for legal attainments of a high order. The present
Commissioner, Thomas Ewing, of New York, and
Ben Butterworth, among his predecessors, are strik-
ing examples of the combination of legal education
and executive ability required in this position.

In the vast range of scientific work which is pre-
sented to the Patent Office, there are developed many
peculiar specialties. Certain men specialize in hy-
draulics, others in electricity, etc., just as do the
inventors they represent. The soliciting of a patent
must be grounded upon a basic knowledge of the law
of contracts ; for a patent is merely a contract between
the inventor and the public as parties ; the considera-
tion of the grant of the patent is the disclosure, in


full and apt terms, of a new and useful invention.
If the disclosure is not such as to teach the public
(those skilled in the art to which the invention re-
lates) how to practice the invention after the monop-
oly has expired, there is a want of consideration;
and so, if the thing is not new, there is no considera-
tion, if it is not useful (within the meaning of the
patent statute) there is no consideration. Again, the
thing patented may be new, and may be useful, but
if its production did not embody invention there is
no consideration for the grant of the patent and it
will be held void. So much to show the vital neces-
sity of a working knowledge of the law of contracts
by one who attempts to solicit a patent.

Next comes the patent statute that is to say, all
of the enactments of Congress concerning the issu-
ance of patents which are now in force ; and this is
outlined in Judge Holt's monograph on Patents in
Modern American Law.

Next come the Rules of the Patent Office, promul-
gated by the Commissioner under the express statu-
tory authorization of Congress ; these rules have the
force and effect of statute law, in so far as they are
not in conflict with statutes of the United States.

It follows from what has been said that no inven-
tion should be intrusted to a patent solicitor who is
not a lawyer ; the inventors who have done otherwise
have suffered enormous losses. Nor does it follow
that the ablest patent lawyers can always obtain valid
patents. The law of patents has been termed "the
metaphysics of the law." There is no department
of the law more difficult, more exacting, or in which


costly errors are more apt to be made, even by the
most learned and painstaking lawyers. But it is the
duty of the lawyer in general practice to warn his
clients interested in inventions of the danger of in-
trusting the most difficult of all legal writing to any
but skilled legal guides. And it is the duty of the
student who would qualify himself to practice patent
law to ground himself firmly in the common law of
contracts before attempting to study the statutes and
rules with which he is to be concerned. Once armed
with knowledge of the law of his subject, he need
have no fear of shortcoming in mechanics, chemistry
or other technical knowledge. That is supplied by the
inventor, and by mechanical experts. The law of
patents is so highly developed, so intricate, and so
unsettled in many vital particulars that the patent
lawyer can never acquire perfect knowledge of the
law. The best patent lawyers approach each new
case with an open mind as to the facts, gather the
facts from those skilled in the subject to which the
invention relates, and apply the law to those facts.
What is loosely called "scientific reading" has its
place in eqiiipping the patent lawyer, but that place
is always secondary to mastery of the patent law.


The inventor brings his lawyer a model, saying, "I
want a patent on this shoe-last. " Looking at the
model, it appears to be an ordinary wooden last, the
heel and toe sections being joined by a curious and
ingenious hinge. So the lawyer advises, "What you
want is a patent for this hinge" a new thought to


the inventor, who afterwards draws royalty for the
use of that hinge used in structures other than shoe-

This typical case illustrates the importance of the
lawyer finding out what the invention really is. Im-
portant here to know you are right before going


Frequently a search, called a "pre-ex.," is made
to ascertain whether the thing in question is probably
patentable. Such searches can only be conveniently
made in the reference room in the Patent Office,
where copies of issued patents are kept in an at-
tempted classification. The question of classification
is very troublesome, and is under constant considera-
tion and revision by the Patent Office.


Deciding that the client has a patentable invention,
we call in the draftsman to illustrate a preferred
embodiment of the invention. The Patent Office
drawing is highly technical, and quite beyond the skill
of the ordinary mechanical draftsman. The case
must be fully but not too fully illustrated. The
drawing must be on bristol board of certain quality
and size, with certain marginal lines and certain sig-
natures of the inventor (may be by attorney) and
witnesses. Then, too, certain symbols indicate by a
few lines complicated electrical structures, while cer-
tain shadings indicate wood, or glass, or other mate-
rial. Much depends on how the invention is pic-


tared, and a good drawing is a good foundation for
the lawyer's work.



Every application for patent comprises a petition,
a description, one or more claims, and the oath.
There is usually a drawing, and a power of attorney,
the latter being embodied in the same instrument with
the petition. The word " specification" usually and
in a technical sense embraces the drawing, descrip-
tion and claims; but in the often-used expression,
"specification and claims," the word specification
means the description alone.


The petition will be best understood by reading the
form therefor prescribed by the Patent Office.

"To the Commissioner of Patents:

Your petitioner, , a citizen of the United

States and a resident of , in the county of

and State of (or subject, etc), whose post-office

address is , prays that letters patent may be granted

to him for the improvement in , set forth in the

annexed specification.

Signed at . , , in the county of and State

of , this day of , 19 ..


The descriptive part of the specification is of vital
importance. It begins with a short description, then
describes briefly the various figures shown in the
drawings, then proceeds with a detailed description,


followed, preferably, by a distinct and separate de-
scription of the operation of the machine, in a ma-
chine application. The best way to study style and
terminology is to study copies of well solicited pat-
ents. Here note that, if the same invention is sub-
mitted to fifty patent lawyers, it is quite impossible
that any two of them would use identical language in
describing it; clearness, conciseness, accuracy, free-
dom from ambiguity, are to be found in the really
fine work done in Patent Office practice.
The rules provide (Rule 39),

"The following order of arrangement should be observed in
framing the specification:

(1) Preamble stating the name and residence of the ap-

plicant and the title of the invention.

(2) General statement of the object and nature of the


(3) Brief description of the several views of the drawings

(if the invention admits of such illustration).

(4) Detailed description.

(5) Claim or claims.

(6) Signature of applicant."

The description should be written with the mind
firmly fixed on the new thing the inventor has pro-
duced. The prior art meaning the same class of in-
vention in the past may be referred to, to point out
what new result the inventor has accomplished, or
what old result he has procured in a new, and cheaper,
or quicker, or otherwise better, way.

Finally, it is an excellent plan to write the claims
before writing the description. The claim defines
what the inventor has patented to him, and its terms
of art must be based on corresponding antecedent


language in the description. Therefore, writing the
claims first establishes the verbiage to be used in the
description, and, better still, crystallizes the inven-
tion in the scrivener's mind so that in his description
he writes always with a view to emphasizing that
which is new.


Judge Holt, in Modern American Law, has de-
fined the claim, and pointed out its essentials. Re-
peating what has been said above, the claim should
be written first. It should be confined to the smallest
number of elements present in the invention which
have novelty as a combination, and which form, as
Judge Holt has elucidated, a true combination as
distinguished from an aggregation. There is no dan-
ger of having too many claims as many as you have
the patience to write, and the good fortune to get
allowed; for each claim is a patent in itself, and
either claim may be held void in litigation without
in anywise affecting the validity of the other.

To learn how to write claims, study the claims that
have been through the fire of litigation. Let us take
as an example this claim: "A switch pin having
a resilient tongue pivoted within or upon its tip, as
set forth." This is claim 1 of U. S. Letters Patent
No. 223,969, issued January 27, 1880, to Watts, for
"An electrical switch pin," and the claim was ad-
judged valid by Judge Morris, 77 Federal Reporter,
page 895. What a thing of beauty this claim is
not a superfluous syllable, no shadow of ambiguity.
Just one grave defect the words "as set forth"


should not have been used. They add nothing to the
value of the claim, and, like " substantially as de-
scribed" are not only surplusage, but may be held to
be words of limitation.

So beginning with the simplest combination in the
invention, having the fewest elements, we will claim
the more complex combinations until we have the
invention guarded against what the infringer of the
future will try to do by way of using the principle
of our invention, but with a change of form, or varia-
tion in mode of operation, which will give the defend-
ant room to argue non-infringement when brought
to book.

Claims for a machine may be drawn to any part of
the machine, or to the machine as a whole though
such "omnibus" claims are seldom worth the paper
they are written on, if the machine is at all compli-
cated. Claims for an article of manufacture should
cover separately and severally each of its patentable
features. In claims for compositions of matter only
the indispensable ingredients should be included,
with their proportions. Processes or methods con-
sist of two or more stages or operations usually
called steps, and the claim should be drawn to only the
indispensable steps, and in their proper order.

In design patents there can be but a single claim,

and that is "The ornamental design for a ,

substantially as shown."


The following form of oath is prescribed by the
Patent Office:



. . , the above-named petitioner, being sworn

(or affirmed), depose, and say. . that citizen. . of

and resident. . of , that

verily believe . . ; to be the original, first, and

inventor. . of the improvement in described and

claimed in the annexed specification ; that do . . not know

and do. . not believe that the same was ever known or used

before invention or discovery thereof, or patented or

described in any printed publication in any country before

invention or discovery thereof, or more than two years

prior to this application, or in public use or on sale in the
United States for more than two years prior to this application ;
that said invention has not been patented in any country foreign

to the United States on an application filed by or

legal representatives or assigns more than twelve months prior
to this application; and that no application for patent on said

improvement has been filed by or representatives

or assigns in any country foreign to the United States, except

as follows :

Inventor's full name :

Sworn to and subscribed before me this day of

, 19..

(Signature of justice or notary)


(Official character)"

Here we must have a care to decide whether the
invention is sole or joint. If a joint invention there
must be joint applicants and a joint oath, or the re-
sulting patent will be void. Conversely, if a sole in-
vention, a joint oath will vitiate the patent. Practi-
cally, where a group of men work on the development
of an invention there is nearly always difficulty in
determining who are the real inventors, or whether
it is a sole or joint invention. This is a constantly


recurring question in the office of the active patent
practitioner, and frequently requires great care in
its consideration.


The Patent Office rule requires

"When the oath is taken before an officer in any country in-
cluding the United States, all the application papers must be
attached together and a ribbon or tape passed one or more times
through all the sheets of the application, and the ends of said
ribbon or tape brought together under the seal before the latter
is affixed and impressed, or each sheet must be impressed with
the official seal of the officer before whom the oath was taken, or,
if he is not provided with a seal, then each sheet must be initialed
by him."


Now having our application written and signed
and sworn to, a fee of $15.00 entitles us to file it, and
starts the examiner on a task that is often worth hun-
dreds of dollars to the applicant, in bringing the rele-
vant prior art to light. The case must be filed within
30 days from the date of the oath, or a new oath will
be required. A filing receipt bearing the date of its
issuance and the serial number of the application is
furnished by the Patent Office. The application
holds that serial number until the patent is printed
for issue, when it is given a new and final patent


The application having been received by the
Patent Office and the filing receipt issued, the appli-
cation is assigned to its proper division for exami-


nation. It then awaits its turn for examination.
The examiner, upon reaching it, examines it draw-
ing, description and oath for informalities, such as
defects in the drawings, want of signatures of wit-
nesses, failure of the notary to affix his seal, and the
like. Then he examines the description, to under-
stand the invention and see that it is sufficiently
described. Then the claims, to see if they are good in
form, and sustained by antecedent description. Then
the merits and here begins the real test of the learn-
ing and skill of the examiner. He may cite us to
encyclopedias, scientific texts, patents of any foreign
country, or may describe old and unpatented things
within his own knowledge as having been in use.
See Drawbaugh v. Seymour, 77 Official Gazette, 318.
The statute reads :

"4893. On the filing of any such application and the pay-
ment of fees required by law, the Commissioner of Patents shall
cause an examination to be made of the alleged new invention
or discovery; and if on such examination it shall appear that
the claimant is justly entitled to a patent under the law, and
that the same is sufficiently useful and important, the Commis-
sioner shall issue a patent therefor."

Bo if our application is in proper form, and we
show and describe a new and useful invention, the
application is allowed at this stage. But usually the
first action is a rejection of all or a part of the claims,
and when this is the case an official letter gives us
the grounds of rejection. The statute reads :

"4903. Whenever, on examination, any claim for a patent
is rejected, the Commissioner shall notify the applicant thereof,
giving him briefly the reasons for such rejection, together with
such information and references as may be useful in judging


of the propriety of renewing his application or altering his
specification; and if, after receiving such notice, the applicant
persists in his claim for a patent, with or without altering his
specifications, the Commissioner shall order a re-examination of
the case."


While no U. S. Patent has ever been held bad
because containing more than one invention, and
the statute is silent upon the subject, it is obvious
that there must be some rule as to this. We find in
the Rules the following:

"41. Two or more independent inventions can not be claimed
in one application ; but where several distinct inventions are de-
pendent upon each other and mutually contribute to produce a
single result they may be claimed in one application.

42. If several inventions, claimed in a single application, be
of such a nature that a single patent may not be issued to cover
them, the inventor will be required to limit the description,
drawing, and claim of the pending application to whichever
invention he may elect. The other inventions may be made the
subjects of separate applications, which must conform to the
rules applicable to original applications. If the independence of
the inventions be clear, such limitation will be made before any
action upon the merits; otherwise it may be made at any time
before final action thereon, in the discretion of the examiner.

A requirement of division will not be repeated without the
written approval of a Law Examiner. After a final require-
ment of division, the applicant may elect to prosecute one group
of claims, retaining the remaining claims in the case with the
privilege of appealing from the requirement of division after
final action by the Examiner on the group of claims prosecuted. ' '

In practice the application of these rules is usually
wholesome, and division required only where there
are clearly present more than one invention. But
in exceptional cases the rule is administered arbi-


trarily arid with no apparent reason save to make two
applications grow where but one grew before. The
subject is too difficult to dwell upon here. The
opinion of Mr. Justice McKenna in the United States
ex rel. Steinmetz v. Allen, 192 U. S. 543, 48 L. Ed.
563, may be read for fuller treatment of this topic.


The right to amend the application is given by
statute. The Patent Office rule is

"68. The applicant has a right to amend before or after the
first rejection of action; and he may amend as often as the
examiner presents new references or reasons for rejection. In
so amending, the applicant must clearly point out all the patent-
able novelty which he thinks the case presents in view of the
state of the art disclosed by the references cited or the objec-
tions made. He must also show how the amendments avoid such
references or objections.

After such action upon an application as will entitle the
applicant to an appeal to the examiners-in-chief (Rule 134), or
after such appeal has been taken, amendments canceling claims
or presenting those rejected in better form for consideration on
appeal may be admitted; but the admission of such an amend-
ment or its refusal, and any proceedings relative thereto, shall
not operate to relieve the application from its condition as
subject to appeal, or to save it from abandonment under Rule
171. If amendments touching the merits of the application are
presented after the case is in condition for appeal, or after

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Online LibraryJames Love HopkinsHow to obtain a patent → online text (page 1 of 3)